CANCELLATION No C 38 463 (INVALIDITY)

 

Facegym Holdings Limited, 6th Floor 1-4 Argyll Street, W1F 7TA London, United Kingdom (applicant), represented by Ashfords LLP, Ashford House Grenadier Road, EX1 3LH Exeter, United Kingdom (professional representative)

 

a g a i n s t

 

PT, Via Marchesina, 31, 20090 Trezzano sul Naviglio (MI), Italy  (EUTM proprietor), represented by Law Firm IP Forma, Užupio g. 30, 01203 Vilnius, Lithuania (professional representative).

 

On 8/4/2021, the Cancellation Division takes the following

 

 

DECISION

1.	The application for a declaration of invalidity is upheld.

 

2.	European Union trade mark No 17 887 409 is declared invalid in its entirety.

 

3.	The EUTM proprietor bears the costs, fixed at EUR 1080.

 

REASONS 

The applicant filed a request for a declaration of invalidity against European Union trade mark No 17 887 409 ‘SKIN IV’ (word mark) (the EUTM), filed on 13/04/2018. The request is directed against all the goods covered by the EUTM. The application is based on EUTM registration No 18 048 853 'SKIN IV' (word mark), filed on 17/09/2018 with priority from 20/03/2018. The applicant invoked Article 60(1)(a) EUTMR in conjunction with Article 8(1)(a) and (b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that the marks are identical and so are the relevant goods, or there is at least a likelihood of confusion between the marks.

The EUTM proprietor did not file any observations, despite having been duly invited to do so by the Office and despite having requested and obtained an extension of the time limit to file observations.

DOUBLE IDENTITY — ARTICLE 8(1)(a) EUTMR

Pursuant to Article 60(1)(a) EUTMR in conjunction with Article 8(1)(a) EUTMR, upon an application for a declaration of invalidity by the proprietor of an earlier trade mark, the later trade mark will be declared invalid if it is identical to the earlier trade mark and the goods or services for which it is registered are identical to the goods or services for which the earlier trade mark is protected.

a) The goods

The goods on which the application is based are the following: 

Class 3: Cosmetics; perfumery; colognes; eau de cologne; eau de toilette; solid perfumes; deodorants; body cleaning and beauty care preparations; skin care preparations; cosmetics for the treatment of dry skin; cosmetics for use in the treatment of wrinkled skin; wrinkle removing skin care preparations; moisturiser; bath and shower gels; bath oils; soaps; hand wash; hand and foot scrubs; body scrub; body oils; body lotions; hand lotions; lotions for the face; toning lotion, for the face, body and hands; skin toners; body milks; body creams; facial washes and cleansers; facial wipes; face creams; face scrubs [non-medicated]; beauty masks; eye gels; eye lotions; eye cream; nail cream; nail care preparations; hair care preparations; shampoos; hair conditioner; hair lotions; hair oils; perfumed powder; perfumed talcum powder; toiletries; aftershaves; aftershave balms and lotions; shaving gels; shaving soap; shaving foam; shaving balm; shaving preparations; scented oils; essential oils; cosmetic oils; massage oils; fragrance emitting wicks for room fragrance; room fragrances; room fragrancing preparations; scented room sprays.

 

The contested goods are the following: 

Class 3: Cosmetics; cosmetic moisturisers; toning creams [cosmetic]; moisturising gels [cosmetic]; beauty care cosmetics; moisturising preparations; cosmetics for use on the skin; cosmetics for personal use; eyes make-up; lip cosmetics; cosmetics containing hyaluronic acid; skin masks [cosmetics]; cosmetic preparations for skin care; cosmetic skin enhancers.

Cosmetics are identically contained in both lists of goods.

The remaining contested goods, namely cosmetic moisturisers; toning creams [cosmetic]; moisturising gels [cosmetic]; beauty care cosmetics; moisturising preparations; cosmetics for use on the skin; cosmetics for personal use; eyes make-up; lip cosmetics; cosmetics containing hyaluronic acid; skin masks [cosmetics]; cosmetic preparations for skin care; cosmetic skin enhancers, all fall within the broad category of the earlier mark’s cosmetics. Therefore, these goods are identical.

b) The signs

 

SKIN IV	SKIN IV
Earlier trade mark	Contested sign

 

The marks are identical. 

c)   Conclusion 

The signs are identical and all the contested goods are identical to the goods of the earlier mark. Therefore, the cancellation application must be upheld pursuant to Article 8(1)(a) EUTMR in conjunction with Article 60(1)(a) EUTMR.

The application is well founded on the basis of the applicant’s EUTM registration No 18 048 853. It follows that the contested trade mark must be declared invalid for all the contested goods.

 

COSTS

According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.

Since the EUTM proprietor is the losing party, it must bear the cancellation fee as well as the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(ii) EUTMIR, the costs to be paid to the applicant are the cancellation fee and the representation costs, which are to be fixed on the basis of the maximum rate set therein.

 

 

The Cancellation Division

 

Vít MAHELKA

Michaela SIMANDLOVA

Liliya YORDANOVA

 

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.